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Archived updates for Friday, September 07, 2007

Nonenabled Alternative Embodiment Invalidates Means-Plus-Function Claim

In Automotive Technologies International, Inc. v. BMW of North America, Inc., et al. (September 6, 2007), the Federal Circuit invalidated claims reciting "means responsive to the motion of said mass" that were asserted to cover an electronic sensor, but where the specification included only limted disclosure of embodiments other than mechanical sensors.

According to the opinion by Circuit Judge Lourie,

Considering first the specification, although two full columns and five figures of the ’253 patent detail mechanical side impact sensors, only one short paragraph and one figure relate to an electronic sensor. Importantly, that paragraph and figure do little more than provide an overview of an electronic sensor without providing any details of how the electronic sensor operates. Figure 11 shows a very general view of an electronic side impact sensor. supra. That figure only shows a boxed housing and a sensing mass. In contrast, Figure 1 shows a mechanical sensor in much more detail, making it clear from the figure how the sensor operates. The specification even states that Figure 11 is a "conceptional view" of an electronic sensor. This is supported by the statement of one of the inventors that Figure 11 "is not meant to represent any specific design or sensor or anything, just a concept." Figure 11 represents a concept of an electronic sensor, not a figure providing details that would show one skilled in the art how to make or use an electronic side impact sensor. Moreover, the textual description of Figure 11, which is the only description of an electronic sensor in the patent, provides little detail concerning how the electronic sensor is built or operated.

. . . Noticeably absent is any discussion of the circuitry involved in the electronic side impact sensor that would provide more detail on how the sensor operates. The mere boxed figure of the electronic sensor and the few lines of description fail to apprise one of ordinary skill how to make and use the electronic sensor.

ATI argues that despite this limited disclosure, the knowledge of one skilled in the art was sufficient to supply the missing information. We do not agree. In Genentech, Inc. v. Novo Nordisk A/S, 108 F.3d 1361, 1366 (Fed. Cir. 1997), we stated: "It is the
specification, not the knowledge of one skilled in the art, that must supply the novel aspects of an invention in order to constitute adequate enablement." Although the
knowledge of one skilled in the art is indeed relevant, the novel aspect of an invention must be enabled in the patent. The novel aspect of this invention is using a velocity-type sensor for side impact sensing.

During prosecution, ATI stated that prior to its invention, "it was assumed that [conventional] inertial sensors would actuate too slowly to deploy an air bag in a side impact situation" and also that it "was unexpected that frontal impact sensors, properly designed, would work in sensing side impacts." ATI further stated that the "essential concept of the invention" is to use "an inertial or acceleration sensor on a motor vehicle for sensing side impacts." Thus, according to ATI, using inertial or acceleration sensors to sense side impacts represented a "breakthrough" in side impact crash sensing.

Given that the novel aspect of the invention is side impact sensors, it is insufficient to merely state that known technologies can be used to create an electronic sensor. As we stated in Genentech, the rule that a specification need not disclose what is well known in the art is "merely a rule of supplementation, not a substitute for a basic enabling disclosure." 108 F.3d at 1366. We further stated that the "omission of minor details does not cause a specification to fail to meet the enablement requirement. However, when there is no disclosure of any specific starting material or of any of the conditions under which a process can be carried out, undue experimentation is required." Id.

Moreover, the specification states that: "Side impact sensing is a new field. The only prior art in the literature utilizes a crush sensing switch as a discriminating sensor to detect a side crash." ’253 patent, col.8 ll. 45-47. In fact, ATI stated that at the time it filed the application for the ’253 patent, it did not know of any electronic sensors used to sense side impact crashes. Given that side impact sensing was a new field and that there were no electronic sensors in existence that would detect side impact crashes, it was especially important for the specification to discuss how an electronic sensor would operate to detect side impacts and to provide details of its construction. As was the case in Genentech, the specification provides "only a starting point, a direction for further research" on using electronic sensors for sensing side impact crashes; it does not provide guidance to a person of ordinary skill in the art on how to make or use an electronic side impact sensor. 108 F.3d at 1366. The specification fails to provide "reasonable detail" sufficient to enable use of electronic side impact sensors. Id.

The inadequacy of the description of an electronic side impact sensor is highlighted by comparison with the extensive disclosure of how to make and use a mechanical side impact sensor, consisting of two full columns. If such a disclosure is needed to enable making and using a mechanical side impact sensor, why is not a similar disclosure needed to enable making and using an electronic side impact sensor, which is an essential aspect of the invention?

In determining that undue experimentation would have been required to make and use an electronic side impact sensor, the district court properly relied on testimony from Delphi’s expert. Delphi’s expert discussed at length how a "great deal of experimentation" would have been necessary to make an electronic side impact sensor after reading the specification of the ’253 patent. He identified and discussed two distinct problems in developing an electronic side impact sensor: how to sense the motion of the mass in order to properly output a stream of data, and how to appropriately process the data. Moreover, Breed stated that based on his experience, electronic sensors for detecting side impact crashes could not be obtained commercially in 1990 and would have had to be developed. Inventor Breed admitted that he had never built an electronic sensor for side impact. The testimony from Delphi’s expert and the inventor’s own testimony provide additional support for the conclusion of a lack of enablement. . . .

We also reject ATI’s argument that because the specification enables one mode of practicing the invention, viz., mechanical side impact sensors, the enablement requirement is satisfied. We addressed and rejected a similar argument made in Liebel-Flarsheim Co. v. Medrad, Inc., 481 F.3d 1371 (Fed. Cir. 2007). In that case, the invention was a front-loading fluid injector system with a replaceable syringe capable of withstanding high pressure for delivering a contrast agent to a patient.
at 1373. We construed the asserted claims, as urged by the patentee, to include an injector with and without a pressure jacket. Although the specification clearly enabled an injector with a pressure jacket, we concluded that it did not enable an injector without such a jacket and that the claims were invalid for lack of enablement. at 1379. We stated that there "must be ‘reasonable enablement of the scope of the range’ which, in this case, includes both injector systems with and without a pressure jacket." withstanding high pressure for delivering a contrast agent to a patient. Id. Id. Id. at 1380 (internal citation omitted).

Similarly, in this case, the claim construction of the relevant claim limitation resulted in the scope of the claims including both mechanical and electronic side impact sensors. Disclosure of only mechanical side impact sensors does not permit one skilled in the art to make and use the invention as broadly as it was claimed, which includes electronic side impact sensors. Electronic side impact sensors are not just another known species of a genus consisting of sensors, but are a distinctly different sensor compared with the well-enabled mechanical side impact sensor that is fully discussed in the specification. Thus, in order to fulfill the enablement requirement, the specification must enable the full scope of the claims that includes both electronic and mechanical side impact sensors, which the specification fails to do.

We stated in Liebel: "The irony of this situation is that Liebel successfully pressed to have its claims include a jacketless system, but, having won that battle, it then had to show that such a claim was fully enabled, a challenge it could not meet." Id. at 1380. ATI sought to have the scope of the claims of the ’253 patent include both mechanical and electronic side impact sensors. It succeeded, but then was unable to demonstrate that the claim was fully enabled. Claims must be enabled to correspond to their scope.

Because we affirm the judgment that the claims are invalid, we need not reach ATI’s appeal or Calsonic and Nissan’s cross-appeal relating to infringement. See Sandt Tech., Ltd. v. Resco Metal Plastics Corp., 264 F.3d 1344, 1356 (Fed. Cir. 2001).

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